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The representatives of the company “Zuykov and Partners” protected the interests of LLC «Masterkhold» in the Arbitration Court of the City Moscow

Dec. 15, 2018

In October 2018, the Arbitration Court of the City of Moscow admitted and satisfied the lawyers’ claims
of the company “Zuykov and Partners,” who represented the interests of LLC «Masterkhold» with respect
to the designations “MasterHold.”
The company “Masterkhold” has been forced to turn to the judicial authorities with a statement of claim
for protection of the exclusive rights to a company name, trademark and a commercial designation against
the illegal use by individual entrepreneur D. N. Kornev.
The plaintiff is a right holder of a company name – Limited Liability Company “Masterkhold” and of an
abbreviated company name – LLC “Masterkhold”, and it was registered as a legal entity in August 24,
2006. The company’s business activities involve the sale of cash-register equipment, its maintenance, as
well as comprehensive automated trading. On August 10, 2016, Rospatent registered a trademark with a
verbal element “MasterHold” (Certificate No. 583580, the priority date is August 11, 2015) in the name
of LLC “Masterkhold” in respect of the products and services of the ICGS classes: 9, 35 and 37. Starting
from 2011 and up to the present, the company has been continuously using the commercial designation
“MasterHold.” From August 1, 2007 up to September 20, 2014, the company was an administrator of a
domain name “masterhold.ru.”
In support of the asserted claims, the plaintiff has referred to the following circumstances. Dmitriy
Nikolaevich Kornev was an employee of LLC “Masterkhold” during the period from 2012 up to 2014.
The defendant's was responsible for ensuring the functioning of the company IT-service. Under the
pretext of improving the optimization of the website work, D. N. Kornev reissued the administration of
the domain name “masterhold.ru” for himself. Later, in 2014, the defendant was registered as an
individual entrepreneur. A year later, D.N. Kornev began to carry out the business activities similar to the
activities of the company “Masterkhold” using the said website.
LLC “Masterkhold” submitted in evidence a notarial inspection protocol of a webpage of
“masterhold.ru,” a reply to the lawyer’s request and an extract from the Unified State Register of
Individual Entrepreneurs. It follows from the said documents that individual entrepreneur Dmitriy
Nikolaevich Kornev is an administrator of the domain name “masterhold.ru” and a person carrying out
his activities via the said website.
Guided by the above said facts and the evidence obtained, the plaintiff came to a conclusion that the
defendant applied intentionally the designations, which were confusingly similar to the means of
individualization of LLC “Masterkhold,” thus using the popularity and a positive business reputation of
the company. In this case, D. N. Kornev is carrying out his business activities with the use of the domain
name “masterhold.ru” in the absence of an appropriate permission from the Limited Liability Company in
the similar field of activity. These actions infringe upon the legal rights and interests of the plaintiff, in
connection with which the company representatives turned to the court.
The defendant, individual entrepreneur Dmitriy Nikolaevich Kornev, objected to the satisfaction of the
asserted claims, and he stated about that in a written reply submitted by them.
Considering the circumstances of the dispute, the court established the following: the plaintiff was the
right holder of the trademark “MasterHold,” using the company name and the commercial designation
“Masterkhold.” The defendant uses the verbal designation “masterhold.ru” in the name of the
administered domain name, as well as on the pages of the website. It is obvious, that the designations are
confusingly similar according to a sound, graphic and semantic criterion. At the same time, LLC
“Masterkhold” has not given a consent to D. N. Kornev to use of the verbal designation “masterhold.ru.”
The fact of the use of the disputed subject matters has not been challenged by the defendant.

Both subjects are carrying out their activities within the Moscow region. Determining the similarity of the
services rendered by the plaintiff and the defendant, the Court stated that it was recognized by fact, if the
products (services) could be attributed by the consumers to the same source of origin due to their nature
or purpose. Thus, the activities of the individual entrepreneur, associated with rendering services, offering
for sale and the sale of products can be considered as similar with the services of the 35 th class of the
ICGS in respect of which the designation of the company “Masterkhold” has been registered (the
demonstration of the products; marketing; the renewal of advertising materials; the presentation of the
products in all media means with the purpose of retail sale; the promotion of the products for the benefit
of third parties, etc.).
The notarial inspection protocol of the website “masterhold.ru” contains the information about the use by
D. N. Kornev of the reputation of the company “Masterkhold” by placing the certificates indicating that
they have been issued in the name of LLC “Masterkhold” and by mentioning the activities joint with the
plaintiff.
Having examined in detail the materials of the case, the judicial instance came to the following
conclusions. The plaintiff's claims are justified, taking into account the notoriety among the customers of
the following things claimed in respect of “Masterkhold”: the means of individualization, the priority date
of the trademark registered by the company, as well as the chronology of the plaintiff’s creation as a legal
entity and the creation of the defendant as an individual entrepreneur.
Taking into account the arguments and evidence submitted by the lawyers of the company “Zuykov and
Partners,” the court admitted the asserted claims and decided to prohibit the defendant to use the
designations “MasterHold,” “Masterkhold” and the website “masterhold.ru” in any manner in respect of
the services similar to the services rendered by the plaintiff. To bind D. N. Kornev to transfer to LLC
“Masterkhold” the right to administer the domain name “masterhold.ru” within 14 calendar days from the
date, when the court decision comes into force. To recover from the individual entrepreneur in favor of
the plaintiff the costs for paying the state fee in the amount of 18,000 rubles.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney